Riverbed Technology, Inc. v. Nicholas Bonner
Claim Number: FA1503001608365
Complainant is Riverbed Technology, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Nicholas Bonner (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <riverbed.technology>, registered with Key-Systems, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2015; the Forum received payment on March 9, 2015.
On March 6, 2015, Key-Systems, LLC confirmed by e-mail to the Forum that the <riverbed.technology> domain name is registered with Key-Systems, LLC and that Respondent is the current registrant of the name. Key-Systems, LLC has verified that Respondent is bound by the Key-Systems, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@riverbed.technology. Also on March 10, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the RIVERBED mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,931,934, registered March 8, 2005). Complainant uses the RIVERBED mark in connection with its goods and services related to its Application Performance Infrastructure. The <riverbed.technology> domain name is identical to Complainant’s RIVERBED mark. The <riverbed.technology> domain name incorporates Complainant’s mark in its entirety and adds the top-level domain “.technology” to the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Additionally, Respondent is not and has never been a licensee of Complainant. Further, Respondent lacks rights or legitimate interests in the <riverbed.technology> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website that offers the disputed domain name for sale. Respondent is a sophisticated “domainer,” and owns at least 130 domain names, most of which were created in attempt to sell to the affected trademark owners for a profit.
Respondent has engaged in bad faith registration and use of the <riverbed.technology> domain name. Respondent has listed the disputed domain name for sale, which constitutes evidence of bad faith pursuant to Policy ¶ 4(b)(i). Additionally, Respondent has registered over 130 domain names and has a pending UDRP proceeding where another complainant is seeking transfer, which is indicative of bad faith registration under Policy ¶ 4(b)(ii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that this <riverbed.technology> domain name was registered February 19, 2014.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts that it owns the RIVERBED mark through its registration with the USPTO (e.g., Reg. No. 2,931,934, registered March 8, 2005). Complainant states that it uses the RIVERBED mark in connection with its goods and services related to its Application Performance Infrastructure. The Panel concludes that Complainant’s valid registration of the RIVERBED mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that the <riverbed.technology> domain name is identical to Complainant’s RIVERBED mark. In so arguing, Complainant asserts that the <riverbed.technology> domain name incorporates Complainant’s mark in its entirety and adds the top-level domain “.technology” to the disputed domain name. Thus, the Panel finds that the disputed domain name is identical to the RIVERBED mark pursuant to Policy ¶4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant urges that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name identifies “Nicholas Bonner” as the registrant of record. Additionally, Complainant asserts that Respondent is not and has never been a licensee of Complainant. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name. See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Further, Complainant contends that Respondent lacks rights or legitimate interests in the <riverbed.technology> domain name, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant asserts that Respondent’s disputed domain name resolves to a website that offers the disputed domain name for sale. Complainant alleges that Respondent is a sophisticated “domainer,” and owns at least 130 domain names, most of which were created in attempt to sell to the affected trademark owners for a profit. Complainant shows that Respondent has made no demonstrable preparation to use the disputed domain name, other than for the purpose of selling to Complainant. Prior panels have concluded that using a disputed domain name to resolve to a website explicitly offering it for sale indicates that respondent has no rights or legitimate interests in that domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Further, Complainant provides evidence that Respondent offered to sell the disputed domain name to Complainant directly. Previous panels have found evidence that a respondent lacks rights or legitimate interests in a disputed domain name when a respondent offers to sell the disputed domain name directly to a complainant. See Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant). As Respondent has offered the disputed domain for sale, both generally and directly to Complainant, the Panel finds that Respondent has not established rights or legitimate interests in respect of the domain name pursuant to Policy ¶ 4(a)(ii).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has listed the disputed domain name for sale, which constitutes evidence of bad faith pursuant to Policy ¶ 4(b)(i). According to Complainant, Respondent contacted Complainant offering to sell the disputed domain name for $1,900. Further, Complainant argues that Respondent prominently featured an offer to sell the disputed domain name on its resolving website. Complainant argues that Respondent acquired the disputed domain name to sell to Complainant, which constitutes bad faith registration and use under Policy ¶ 4(b)(i). Previous panels have found bad faith when a respondent offers a domain name for sale in excess of any out of pocket costs. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, The Panel finds that Respondent’s attempt to sell the disputed domain name, which is identical to Complainant’s mark, for more than its out of pocket costs, is evidence of bad faith registration and use under Policy ¶ 4(b)(i).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <riverbed.technology> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 17, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page